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June 10, 2013

Congress Continues Efforts to "Reform" U.S. Patent Law

It has been less than three
months since the remaining provisions of the Leahy-Smith America Invents Act (AIA)
took effect, and just short of five months since the AIA Technical Corrections
Act was enacted to "correct and improve certain provisions" of that
legislation. Nevertheless, Congress is
once again looking to further reform (or tweak) U.S. patent law, with three
patent-related bills and a discussion draft for a fourth bill having been
introduced or released in the past four weeks.

On May 16, the first of the
three new patent bills was introduced in the House by Rep. Theodore Deutch
(D-FL). The "End Anonymous Patents
Act" (H.R. 2024)
would require the disclosure of ownership and transfers of ownership of patents. In particular, the Act would require:

(1) The entity to which a
patent is issued shall, upon issuance of the patent, file with the USPTO a
disclosure of the patent owner and any real party in interest in the patent.

(2) The owner of a patent
shall, upon payment of the maintenance fee, file with the USPTO a disclosure of
the identity of the patent owner and any real party in interest in the patent.

(3) The entity to which a
patent, application, or interest therein is sold, granted, or conveyed shall,
within 90 days after the date of the sale, grant, or conveyance, file with the USPTO
a disclosure of the sale, grant, or conveyance, and any real party in interest
in the patent, application, or interest.

H.R. 2024 specifies that
the failure to comply with the above requirements will result in the patent
owner or real party in interest being limited to "damages from the date on
which such requirement is met" in any infringement action brought by the
patent owner or real party in interest.
After being introduced, H.R. 2024 was referred to the House Committee on
the Judiciary.

On May 22, Sen. John Cornyn
(R-TX) introduced the "Patent Abuse Reduction Act of 2013" (S. 1013)
in the Senate. S. 1013 would add
procedural requirements for patent infringement suits to Title 35. In addition to requiring a party alleging
infringement to include in its complaint, counterclaim, or cross-claim an
identification of each patent, and each claim of each patent, allegedly
infringed, as well as a specific identification of each accused instrumentality
alleged to infringe the claim, the party alleging infringement would also be
required to provide "a description of the principal business of the party
alleging infringement" and to identify co-owners, assignees, and exclusive
licensees of the asserted patent. S.
1013 would also limit discovery prior to claim construction "to
information necessary for the court to determine the meaning of the terms used
in the patent claim, including any interpretation of those terms used to
support the claim of infringement."
After being introduced, S. 1013 was referred to the Senate Committee on
the Judiciary.

(A) Increase from 4 to 7
the number of previously filed patent applications (excluding foreign applications,
provisional applications, or international applications for which the basic
national fee under was not paid) on which the applicant as been named as an
inventor.

(B) Increase from 3 times
to 5 times the amount by which an applicant's gross income exceeds the median
household income for the preceding calendar year.

(C) Increase from 3 times
to 5 times the amount by which the gross income of an entity having an
ownership interest in the application exceeds the median household income for
the preceding calendar year.

H.R. 2236 would also
require the Director to approve or deny any application for status as a micro
entity not later than 45 days after the date on which the application is filed. After being introduced, H.R. 2236 was
referred to the House Committee on the Judiciary.

In addition to the three
bills discussed above, Rep. Bob Goodlatte (R-VA), the Chairman of the House
Committee on the Judiciary, announced the release on May 23 of a discussion draft of legislation "designed to address the
ever increasing problem of abusive patent litigation." According to Chairman Goodlatte, the
discussion draft
"helps to address the issues that businesses of all sizes and industries
face from patent troll-type behavior and aims to correct the current
asymmetries surrounding abusive patent litigation" and marks "the
first step in enacting meaningful legislation that reduces the costs of
frivolous litigation, increases patent certainty and promotes the creation of
American jobs." A summary of the
draft legislation can be found here. Patent
Docs will provide more information regarding the bill once the legislation,
or its Senate companion, is introduced.

For additional information
regarding this and other related topics, please see: